Olvey & Sketo v Danko & Gabrys - [2019] APO 42

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Olvey & Sketo v Danko & Gabrys [2019] APO 42

Patent Application: 2016259383

Title:Corrugated Pallet

Patent Applicant: Sean G. Gumbert; Joseph J. Danko; Douglas A. Olvey; James L. Sketo; Christopher W. Gabrys

Requestors:  Douglas A. Olvey & James L. Sketo
Delegate:  Isaac Tan
Decision Date:  10 September 2019
Hearing Date:  Written Submissions completed on 8 April 2019

Catchwords: PATENTS – section 32 – request for the Commissioner to make a determination between applicants – evidence appears to be based on personal recollections and belief – section 32(1) is a discretionary provision - insufficient evidence to make a determination – requestors carry the legal burden of proof – costs awarded against the requestor.

Representation: Douglas A. Olvey & James L. Sketo are represented by Alison McMillan, Patent Attorney of IP Gateway Patent & Trade Mark Attorneys Pty Ltd.
Joseph J. Danko & Christopher W. Gabrys are self-represented.

Sean G. Gumbert elected not to play a part in these proceedings.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2016259383

Title:Corrugated Pallet

Patent Applicant: Sean G. Gumbert; Joseph J. Danko; Douglas A. Olvey; James L. Sketo; Christopher W. Gabrys

Date of Decision: 10 September 2019
DECISION
There is insufficient evidence to make a determination. Consequently, I decline to make a determination.
The application will remain in the names of Sean G. Gumbert, Joseph J. Danko, Douglas A. Olvey, James L. Sketo and Christopher W. Gabrys.
REASONS FOR DECISION
Background

Australian Patent Application 2016259383 (application) was filed on 17 November 2016 in the names of Sean G. Gumbert, Joseph J. Danko, Douglas A. Olvey, James L. Sketo and Chrisopher W. Gabrys (hereinafter referred to collectively as the applicant). The inventors were named as Douglas A. Olvey and James L. Sketo. The application is a divisional of AU 2013281191 (‘191 application), which has since lapsed due to a failure to pay the acceptance fee by the due date. While an extension of time was requested pursuant to section 223 of the Patents Act1990 (the Act), the Delegate remained unconvinced that this provision should be enlivened and refused the extension of time request.[1]
[1] For an overview of the considerations in relation to s 223, see Boehringer Ingelheim Animal Health USA Inc. v Intervet International B.V. [2019] APO 33; Magnum Magnetics Corporation [2019] APO 3; UON Pty Ltd v Taranis Power Group Pty Ltd [2019] APO 6.
On 21 November 2017, a Delegate of the Commissioner wrote to the applicant stating:
Dear Applicant,
It has come to the Commissioner’s attention while reviewing submissions made in relation to a request for an extension of time for parent application 2013281191 that there may be a deficiency in the Notice of Entitlement on file for the present application in view of the inconsistency between the inventor and applicant listing. This may give rise to an objection at further report stage and I therefore invite the Applicant to address this matter when responding to the…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2019] APO 42
Decision Date: 10 September 2019

CaseChat Overview and Summary

The case of Olvey & Sketo v Danko & Gabrys was brought before the court to address a dispute over a patent application. The applicants involved were Sean G. Gumbert, Joseph J. Danko, Douglas A. Olvey, James L. Sketo and Christopher W. Gabrys. The primary legal issue before the court was whether sufficient evidence existed to warrant the Commissioner making a determination between the applicants under section 32 of the relevant legislation. The court needed to assess whether the evidence presented was adequate to support a decision and whether the requestors had successfully discharged their burden of proof.

The court found that the evidence provided by the requestors appeared to be based on personal recollections and belief, which was insufficient to meet the required standard. Section 32(1) was recognised as a discretionary provision, and the court emphasised that the burden of proof lay with the requestors to demonstrate that a determination was warranted. Given the nature and quality of the evidence, the court concluded that it could not make a determination based on the information presented. Consequently, the court declined to make a determination and awarded costs against the requestors.

The final orders of the court were that there was insufficient evidence to make a determination, and the application would remain in the names of the original applicants. The court's decision underscored the importance of providing robust and credible evidence to support requests under section 32, highlighting the discretion available to the Commissioner and the burden of proof on the requestors.

Orders

Orders of the court

There is insufficient evidence to make a determination. Consequently, I decline to make a determination.

The application will remain in the names of Sean G. Gumbert, Joseph J. Danko, Douglas A. Olvey, James L. Sketo and Christopher W. Gabrys.

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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